Transcript here - INVENTIVE STEP

Bilski and Beyond:
Changing IP for the Information Age
Kristen Jakobsen Osenga
University of Richmond School of Law
Overview
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Other Notable Subject Matter Cases
Implications for Business Methods, Software
& Tax Inventions
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Other Notable § 101 Cases
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In re Nuijten (CAFC)
In re Ferguson (CAFC, SCT)
In re Nuijten
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500 F.3d 1346 (CAFC 2007, cert denied 2008)
Method for introducing watermark into
signals with reduced distortion – allowed
Storage medium with method – allowed
Signal encoded via claimed method - rejected
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In re Nuijten
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Examiner, BPAI reject signal claim
CAFC (JJ. Gajarsa, Linn, Moore)
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Majority:
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“A transitory, propagating signal . . . is not a ‘process,
machine, manufacture, or composition of matter.’”
Process = steps, machine = made of parts,
manufacture = must be tangible
Dissent (J. Linn)
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Article of manufacture (made by man)
In re Ferguson
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558 F.3d 1359 (CAFC 2009)
Method of marketing a product, comprising:
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Developing a shared marketing force;
Using shared marketing force to market plurality
of products from plurality of companies;
Obtaining share of total profits from each of
plurality of companies; and
Obtaining an exclusive right to market each of
plurality of products.
In re Ferguson
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A paradigm for marketing software,
comprising:
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A marketing company that markets software from
a plurality of different . . . software companies,
and carries out and pays for operations associated
with marketing of software for all of said
different . . . software companies…
In re Ferguson
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Examiner rejected under other patentability
requirements, BPAI raised § 101
CAFC (JJ. Newman, Mayer, Gajarsa)
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Method claims fail Bilski’s machine-ortransformation test
Paradigm claims are not drawn to any of the four
statutory categories, but rather abstract idea
J. Newman concurs in result, but for § 103
reasons, not subject matter eligibility
In re Ferguson
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Petition for writ of
certiorari filed June 2, 2009
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Are claims that recite
business methods unpatentable per se when they
are not tied to a machine and do not preempt any
mathematical algorithm?
Is a claim unpatentable under § 101 as being an
abstract idea because it does not come within the
machine-or-transformation test?
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Implications for business
methods, software, & tax
What do we do now???
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What are the courts making of this?
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Some district court cases, many BPAI cases
Compilation of post-Bilski and other subject
matter-based opinions available at
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www.aipla.org/MS/ElectronicandComputerLaw
Take-away lessons?
Fort Properties Inc. v.
American Master Lease (C.D. Cal. 1/22/09)
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Method for creating real estate investment
instrument
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Aggregating real property, encumbering property,
creating plurality of deedshares by dividing title
PTO ok’s under State Street (useful, concrete,
tangible), ct kills under Bilski (machine-ortransformation)
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Need not be performed by machine
Manipulates only legal ownerships (not physical)
Cybersource Corp. v.
Retail Decisions (N.D. Cal. 3/27/09)
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Method & Beauregard claims
A method for verifying credit
card transaction over the
Internet
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Obtaining information about other transactions;
Constructing a map of credit card numbers based
on other transactions; and
Utilizing map to determine if transaction is valid.
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Cybersource Corp. v.
Retail Decisions (N.D. Cal. 3/27/09)
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No transformation
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Credit card numbers are not
physical or representations
Abstraction only – relationship
between card holder and card issuer
No machine
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“Over the internet” does not tie to a particular
machine
Internet = abstraction, no meaningful limit
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Cybersource Corp. v.
Retail Decisions (N.D. Cal. 3/27/09)
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Computer readable medium containing
program instructions for detecting fraud in a
transaction . . . over the internet, wherein
execution of the program instructions by one
or more processors causes one or more
processors to carry out the steps of:
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Obtaining credit card information
Verifying based on plurality of parameters
…
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Cybersource Corp. v.
Retail Decisions (N.D. Cal. 3/27/09)
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No exemption from Bilski test for
Beauregard-type claims
Programmed computer (generality) = not
machine
Process steps = not transformation
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Every Penny Counts Inc. v. Bank of
America Corp. (M.D. Fla. 5/27/09)
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System (for payors to donate) comprising:
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A network;
Entry means coupled to network;
Identification entering means in entry means & coupled to
network;
Said network having computing means
 Having data concerning payor
 Being responsive to data about payment
 Apportioning excess payment
Every Penny Counts Inc. v. Bank of
America Corp. (M.D. Fla. 5/27/09)
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System = process for § 101 purposes (???)
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“Simply because the process at issue requires
machine or computers to work, however, does not
mean that the process or system is a machine.”
No transformation, no machine = not eligible for
patenting
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A Sampling of Cases
from the Board
BPAI Case Sampler – Algorithms
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Ex parte Cornea-Hasegan (2008-4742, 1/13/09)
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Method for predicting result of floating point
mathematical operations & calculating results
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No machine (general processor, unspecified
programming)
No transformation (just numbers)
“A computer readable media” including program for
predicting result…= article of manufacture, but fails
under Bilski
BPAI Case Sampler - Machines
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Ex parte Uceda-Sosa (2008-1632, 11/18/08)
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Method of representing information
Middleware module to represent & store information
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An apparatus to represent & store information
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A library having a module to generate an information container,
said module allowing for (the claimed method)
A storage unit containing a library having a module to generate
information container, said module allowing for (method)
A signal-bearing medium tangibly embodying a program
of machine readable instructions to perform the claimed
method
BPAI Case Sampler - Machines
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Method claim fails machine-or-transformation
Middleware claim fails because functionally
descriptive
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“[M]odule is simply a computer software module that is
used to represent and store information . . . However, the
claimed software module is not tangibly embodied on a
computer-readable medium [and is therefore functional
descriptive material].
Apparatus claim are §101 subject matter
Signal claim fails under Nuijten
BPAI Case Sampler - Software
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Ex parte Seshadri (2008-2854, 2/27/09)
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A computer implemented notification system
comprising the following computer executable
components:
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A component executing on a computer…
A database engine…; and
A notification server…
Examiner said software per se; BPAI says no
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Claims recite “a component executing on a
computer”, not software per se (OK under§ 101)
BPAI Sampler – Computer Media
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Ex parte Bo Li (2008-1213, 11/6/08)
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Computer usable medium having computer
readable program embodied thereon
BPAI reverses examiner’s § 101 rejection
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Nuijten does not remove validity of Beauregard
claims
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BPAI Sampler – Computer Media
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Ex parte Kumar (2008-1649, 11/19/08)
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Tangible computer accessible medium,
comprising software instructions executable to
implement
BPAI doesn’t act under § 101, but cautions that a
“computer readable medium comprising a
modulated signal” may not be statutory subject
matter post-Nuijten
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BPAI Sampler – Computer Media
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Ex parte Brubacher (2008-1508, 1/22/09)
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Computer-readable medium having computerexecutable instructions…
BPAI upholds examiner’s § 101 rejection because
“computer-readable medium having computerexecutable instructions” encompasses signals, not
subject matter per Nuijten
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BPAI Sampler – Computer Media
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Ex parte Salesin (2008-2578, 5/22/09)
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Computer-readable medium having computerexecutable instructions…
BPAI initiates § 101 rejection
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“[A] computer readable medium includes a signal
embodied in a carrier wave. A signal embodied in a
carrier wave is not statutory subject matter because it
does not fall within any of the four categories of
statutory subject matter. See In re Nuijten.”
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BPAI Sampler – Data Structures
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Ex parte Hoya (2008-0024, 2/26/09)
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A memory system adapted to model
physiological functions…comprising:
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A short-term memory neural network unit; and
A long-term memory neural network unit…
Not statutory subject matter under Bilski and
Nuijten because claim can cover embodiment
lacking tangible structure
BPAI Sampler – Data Structures
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Ex parte Klosterman (2008-1649, 4/20/09)
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A computer program product for use in an
information handling system…comprising a
plurality of instructions
BPAI initiates § 101 rejection
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A ‘computer program product’ does not fall within
any of the four classes of § 101. … These claims
recite a ‘computer program product’ data
structure…There is no claim language . . . which
defines any structural and functional interrelationship
between the data structure and the computer.
BPAI Sampler – Refining Bilski
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Ex parte Sesek (2009-0458, 3/25/09)
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Method of notifying a mail carrier of anticipated
load by monitoring mail, producing a forecast,
notifying mail carrier of forecast,
and notifying of changes
Not tied to a machine
Not a transformation, does
not transform mail or any article
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Transmits a forecast, not physical or representation
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BPAI Sampler – Refining Bilski
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Ex parte Harris (2007-0325, 1/13/09)
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Method of conducting an auction over a network
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Not machine
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Allowing users to submit bids over network
Collecting bids on server
Defining secret rules for auction
Network, server not specified electronic, could be
human (and not limited)
Not a transformation (data isn’t physical)
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BPAI Sampler – Refining Bilski
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Is it AND or OR?
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Ex parte Becker (2008-2064, 1/26/09)
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“To the extent that Appellants’ claims may transform
data, we note that transformation of data, without a
machine, is insufficient to establish patent eligibility
under § 101.”
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BPAI Sampler – None of the Four
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Ex parte Daughtrey (2008-0202, 4/8/09)
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A user interface…comprising a fare evaluation
result table.
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“User Interface” is not one of the four categories
Ex parte Johnson (2009-0470, 6/10/09)
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A network collaboration tool . . . comprising web
browser software, a graphical collaboration tool,
and a server process
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“Network collaboration tool” is not one of the four
Pointy Headed Thoughts
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What’s wrong with Bilski
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“Problems” with business method patents
How they should handle the problems
Special issues for tax methods
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Take Away Lessons? (from scratch)
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Add a machine
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Use non-signal computer readable media
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[method step ] “by a programmed computer”
Make sure there’s support in the spec for
exemplary hardware
“storage devices”
Multi-format claims
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Machine, process, article of manufacture
Take Away Lessons? (pending/issued)
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Add a machine and/or non-signal computer
readable media…if you can
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Support in spec is great
Inherency/PHOSITA argument if not
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Tougher path but it could work
Potential for reissue?
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New interpretation of § 101 can help meet reissue
standard (invalid because patentee claimed more
or less than he had a right to do so)